Case C‑421/15 P

Yoshida Metal Industry Co. Ltd

v

European Union Intellectual Property Office (EUIPO)

(Appeal — EU trade mark — Registration of signs consisting of a surface with black dots — Declaration of invalidity — Regulation (EC) No 40/94 — Article 7(1)(e)(ii) — Article 51(3))

Summary — Judgment of the Court (Fifth Chamber), 11 May 2017

1. Appeal—Grounds—Incorrect assessment of the facts and evidence—Inadmissibility—Review by the Court of the assessment of the facts and evidence—Possible only where the clear sense of the evidence has been distorted

   (Art. 256(1) TFEU; Statute of the Court of Justice, Art. 58, first para.)

2. EU trade mark—Definition and acquisition of the EU trade mark—Absolute grounds for refusal—Signs which consist exclusively of the shape of goods which is necessary to obtain a technical result—Concept—Presence of non-essential characteristics with no technical function—Existence of other shapes allowing the same technical result to be obtained—Not relevant to the ground for refusal

   (Council Regulation No 40/94, Art. 7(1)(e)(ii))

3. EU trade mark—Definition and acquisition of the EU trade mark—Absolute grounds for refusal—Signs which consist exclusively of the shape of goods which is necessary to obtain a technical result—Identification of the essential characteristics of a sign

   (Council Regulation No 40/94, Art. 7(1)(e)(ii))

4. EU trade mark—Definition and acquisition of the EU trade mark—Absolute grounds for refusal—Signs which consist exclusively of the shape of goods which is necessary to obtain a technical result—Aim

   (Council Regulation No 40/94, Art. 7(1)(e)(ii))

5. Appeal—Grounds—Plea submitted for the first time in the context of the appeal—Inadmissibility

   (Art. 256(1), second para., TFEU; Statute of the Court of Justice, Art. 58, first para.)

1.  See the text of the decision.

   (see para. 22)

2.  By restricting the ground for refusal set out in Article 7(1)(e)(ii) of Regulation No 40/94 to signs which consist ‘exclusively’ of the shape of goods which is ‘necessary’ to obtain a technical result, the legislature duly took into account that any shape of goods is, to a certain extent, functional and that it would therefore be inappropriate to refuse to register a shape of goods as a trade mark solely on the ground that it has functional characteristics. By the terms ‘exclusively’ and ‘necessary’, that provision ensures that solely shapes of goods which only incorporate a technical solution, and whose registration as a trade mark would therefore actually impede the use of that technical solution by other undertakings, are not to be registered. Such a registration would unduly impair the opportunity for competitors to place on the market goods whose shapes incorporate the same technical solution.

   As regards the condition relating to the fact that the ground for refusal covers any sign consisting ‘exclusively’ of the shape of goods which is necessary to obtain a technical result, the Court has held that the presence of one or more minor arbitrary elements in a sign, all of whose essential characteristics are dictated by the technical solution to which that sign gives effect, does not alter the conclusion that the sign consists exclusively of the shape of goods which is necessary to obtain a technical result. In addition, the ground for refusal under Article 7(1)(e)(ii) of Regulation No 40/94 is applicable only where all the essential characteristics of the sign are functional, with the result that such a sign cannot be refused registration as a trade mark under that provision if the shape of the goods at issue incorporates a major non-functional element, such as a decorative or imaginative element which plays an important role in the shape.

   As regards the condition that registration of a shape of goods as a trade mark may be refused under Article 7(1)(e)(ii) of Regulation No 40/94 only if the shape is ‘necessary’ to obtain the technical result intended, that condition does not mean that the shape at issue must be the only one capable of obtaining that result.

   (see paras 26-28)

3.  The correct application of Article 7(1)(e)(ii) of Regulation No 40/94 requires that the essential characteristics of the sign at issue — that is, the most important elements of the sign — be properly identified by the authority deciding on the application for registration of the sign as a trade mark. Once the sign’s essential characteristics have been identified, the competent authority has to ascertain whether they all perform the technical function of the goods at issue.

   (see para. 29)

4.  The inclusion in Article 7(1) of Regulation No 40/94 of the prohibition of registration as a trade mark of any sign consisting of the shape of goods which is necessary to obtain a technical result ensures that undertakings may not use trade mark law in order to perpetuate, indefinitely, exclusive rights relating to technical solutions.

   Moreover, the legislature has laid down with particular strictness that shapes necessary to obtain a technical result are unsuitable for registration as trade marks, since it has excluded the grounds for refusal listed in Article 7(1)(e) of Regulation No 40/94 from the scope of the exception under Article 7(3) of that regulation. It thus follows from Article 7(3) of the regulation that, even if a shape of goods which is necessary to obtain a technical result has become distinctive in consequence of the use which has been made of it, it is prohibited from being registered as a trade mark.

   Consequently, Article 7(1)(e)(ii) of Regulation No 40/94 constitutes an obstacle that may prevent a sign consisting exclusively of the shape of goods which is necessary to obtain a technical result from being registered as a trade mark, even though that sign is capable of performing the essential function of a trade mark, that of guaranteeing the identity of the origin of the goods or services in question to the consumer by enabling him, without any possibility of confusion, to distinguish those goods or services from others which have another origin.

   (see paras 33-35)

5.  See the text of the decision.

   (see para. 46)